The decision of the Court of Justice of the European Union (CJEU) Coty Germany GmbH v Amazon (C-567/18) has determined that a company that stores products on behalf of a third party without knowing that said products infringe the trademark rights of third parties does not infringe such rights, as long as the storing company does not pursue the objective of offering the products for sale.
The plaintiff at the background of the case, Coty Germany, is a distributor of perfumes. Coty Germany claimed that two Amazon Group companies were infringing their "Davidoff" trademark by storing fake perfumes and delivering them on behalf of third parties. As it is known, Amazon not only sells its own products from its own inventory, but also offers warehousing and logistics services for third parties that sell from its platform. Coty Germany initially filed the claims before the Munich courts, which ruled in favor of Amazon. On appeal the German Federal Court of Justice (Bundesgerichtshof) referred the following question to the CJEU on the interpretation of Article 9 (2) b ), of Regulation 207/2009 and Article 9, paragraph 3, letter b), of Regulation 2017/1001 : ‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’
The CJEU answered "No" to the question. A company that provides product storage only infringes trademark rights if it also pursues the goal of offering the products for sale or putting them on the market. Although the regulations do not contain a definition of the word "use" of a trademark, the CJEU stressed that only a third party that has direct or indirect control of the act can effectively stop that use and, therefore, comply with the claims of the owner of the brand
The CJEU decision, which is in line with previous decisions on similar issues, such as eBay (L'Oréal et al., C 324/09), makes it very clear that service providers (warehousing, delivery, etc.) for third parties parties do not actively "use" a trademark. This decision is good news for e-commerce platforms that store products on behalf of sellers and can also be applied to certain other service providers, such as carriers. In any case, despite this decision, it is still possible that Amazon will end up being condemned, since the CJEU answers hypothetical questions that may not correspond to the facts of the case. In this particular case, Coty argues that Amazon not only stores products, but also has an active role in choosing search keywords, managing sales, providing the online platform, etc. If all this amounts to "use" and thus infringement, is for the German courts to decide.
Read the decision in full, here.
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